WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Duracell Batteries BVBA v. Stanley Myers Ltd

Case No. D2011-1325

1. The Parties

The Complainant is Duracell Batteries BVBA of Aarschot, Belgium represented by D. Young & Co., United Kingdom of Great Britain and Northern Ireland (“U.K.”).

The Respondent is Stanley Myers Ltd, Domain Contact (401003) of London, U.K.

2. The Domain Name and Registrar

The disputed domain name <duracellenergy.com> is registered with Freeparking Domain Registrars, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2011. On August 3, 2011, the Center transmitted by email to Freeparking Domain Registrars, Inc. a request for registrar verification in connection with the disputed domain name. On August 12, 2011, Freeparking Domain Registrars, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2011.

The Center appointed Arne Ringnes as the sole panelist in this matter on September 14, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant and various companies owned by the Complainant’s parent company own a large number of trademark registrations containing the word DURACELL worldwide that precede the Respondent’s registration of the disputed domain name. The Complainant and the Complainant’s parent company also own a large number of domain names and company names that predates the registration of the disputed domain name.

The Respondent has registered/applied for registration or assignment of some trademarks containing the word DURACELL in the U.K. and at the Community trademark level. The Complainant has opposed these registrations/applications and has succeeded in the opposition against some of these registrations and applications and is waiting for confirmation as to the result of the opposition for the remaining registrations and applications.

The disputed domain name is currently not in use.

5. Parties’ Contentions

A. Complainant

The Complainant and various companies owned by the Complainant’s parent company own a large number of trademark registrations containing the word DURACELL worldwide. The earliest registration dates back to 1965. The same applies with respect to domain names and company names containing the word DURACELL. Further, the Complainant and the Complainant’s parent company own a large number of domain names and company names that predate the registration of the disputed domain name.

The Complainant has also been successful in previous UDRP cases.

To the best of the Complainant’s knowledge, the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark. The Respondent has registered/applied for registration or assignment of some trademarks containing the word DURACELL in the U.K. and at the Community trademark level. The Complainant has, however, succeeded in the opposition against some of these registrations and has opposed the remaining and is waiting for confirmation with respect of the result of the opposition against these.

The word DURACELL is an invented word coined by the Complainant. According to the Complainant the word “energy” creates a direct association with the Complainant and its business. The Complainant sees the registration of the disputed domain name as an attempt by the Respondent to trade off the reputation of the Complainant’s reputation for its own monetary gain. Due to the longstanding goodwill and reputation of DURACELL, the Complainant believes it is likely that use of the disputed domain name will mislead the public by suggesting a connection between the Complainant and the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

According to previous UDRP panels a registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has several trademark registrations for DURACELL that predate the registration of the disputed domain name.

The disputed domain name includes the Complainant’s trademark DURACELL in its entirety and as a dominant element. The disputed domain name differs from the registered DURACELL trademark by the additional term “energy” and the gTLD “.com”. The Panel agrees with the Complainant that the word “energy” is likely to be associated with the Complainant and/or its products and business. Previous UDRP panels have ruled that the mere addition of a non-significant element does not generally sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). The additional word “energy” does not serve sufficiently to distinguish the disputed domain name from the Complainant’s DURACELL trademark.

Further and with respect to the addition of “.com” the Panel refers to previous UDRP panels that have ruled that the mere addition of gTLDs is not sufficient to avoid confusing similarity, cf. F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

On the basis of the above Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has, however, registered/applied for registration or assignment of some trademarks containing the word DURACELL. The Complainant has succeeded in its opposition against most of these, but the outcome of the opposition is not clear for all of these. Despite this, since the Respondent has not responded the Panel concludes that it has failed to assert any rights or legitimate interests. Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). The Panel finds that the Complainant established such a prima facie case, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Further, the Panel holds, as confirmed by previous UDRP decisions, that passive holding of a domain name with knowledge that the domain name infringes on another party’s trademark rights is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Companhia Brasileira de Bebidas - CBB v. Pedro Cuesta Unkhoff and IA LTDA. aka Indústria Amazônia Ltda, WIPO Case No. D2005-0634.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence of any good faith use by the Respondent of the disputed domain name, the Panel considers on balance that the Respondent has registered and used the disputed domain name in bad faith. Thus, the Panel finds the third requirement of Paragraph 4(a) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <duracellenergy.com> be transferred to the Complainant.

Arne Ringnes
Sole Panelist
Dated: October 13, 2011